Legal Updates

Do consumers think directly of 'Scotch Whisky' when confronted with 'Glen Buchenbach' whisky?

In Scotch Whisky Association v Klotz, the Court of Justice of the European Union has interpreted Articles 16(a) to (c) of Regulation 110/2008 on the protection of geographical indications for spirit drinks.

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Croatia repeals Board of Appeals - IP Office decisions must now be challenged before Administrative Court

Following the coming into force of the Law on Amendments to the Trademark Law, which repealed the Board of Appeals, decisions of the IP Office must now be challenged before the Administrative Court in Zagreb.

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Patron Spirits International's shot across the bow misses the mark in protecting PYRAT's territory in rum market

International premium spirit giant Patron, owner of PYRAT in Class 33, has failed to prevent Australian distillery Fernbrew from registering THE PIRATE BAY RUM COMPANY in Class 33.

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adidas v Skechers: was a preliminary injunction proper?

The US Court of Appeals for the Ninth Circuit has affirmed in part and reversed in part a preliminary injunction prohibiting Skechers from selling shoes that allegedly infringed and diluted adidas’ trade dress and trademark.

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Setback for Louboutin as Delhi High Court rules that single colour cannot be a trademark

In a blow to Louboutin’s efforts to enforce its ‘red sole’ mark worldwide, the Delhi High Court has held that a single colour does not qualify as a ‘mark’ under the Trademarks Act.

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UDRP complaint unlikely to succeed without proof of bad-faith registration, even if respondent's subsequent use is questionable

A recent decision by a WIPO panel highlights that it is crucial to prove both registration and use in bad faith under the UDRP, even where the respondent’s subsequent use of the domain name is...

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UK Supreme Court Cartier judgment: who pays for website blocking orders?

In a blow for rights holders, in Cartier International AG v British Telecommunications Plc the UK Supreme Court has decided that internet service providers should not bear the implementation costs for website blocking orders.

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BACKYARD GRILL summary judgment gets burnt by Fourth Circuit

In Variety Stores Inc v Wal-Mart Stores Inc, the US Court of Appeals for the Fourth Circuit has reversed summary judgment in a trademark infringement dispute over the use of the term 'Backyard' on grills.

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In rare decision, three-member UDRP panel fails to agree on respondent's rights

In this rare decision under the UDRP, the dissenting panellist found that the respondent did not register and use the domain name in bad faith, but nevertheless had no rights or legitimate interests in it.

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Slight hope for L'Oréal in MASTER cases as CJEU annuls General Court decisions

The CJEU has annulled decisions of the General Court in which the latter had confirmed that there was a likelihood of confusion between L’Oréal’s MASTER marks and Guinot’s earlier mark MASTERS COLORS PARIS.

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IPEC: goodwill in 'Prick' from tattooing does not extend to sale of cacti

The Intellectual Property Enterprise Court in London has held that there was no passing off by a shop selling cacti under the name Prick of goodwill arising from tattooing services offered under the same name.

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Proposed amendments to Trademarks Act's border enforcement provisions - what rights holders should know

The Intellectual Property (Border Enforcement) Bill, which was recently introduced in Singapore’s Parliament, aims to strengthen border enforcement measures against goods which infringe IP rights, among other objectives...

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Second Circuit gives tidy answer on attorneys' fees in SLOPPY TUNA trademark row

In a dispute over use of SLOPPY TUNA for a restaurant, the US Court of Appeals for the Second Circuit has addressed for the first time whether attorneys’ fees should be included in an award of costs.

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Messi scores trademark goal as General Court finds no likelihood of confusion between MESSI and MASSI

The EU General Court has found that there was no likelihood of confusion between footballer Lionel Messi’s mark MESSI and the earlier mark MASSI, despite the identity of the goods and the similarity of the marks.

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New Andean Tribunal of Justice ruling on prejudicial interpretations - why the trademark community should take note

The Andean Tribunal of Justice has issued a ruling regarding requests for a prejudicial interpretation which will have a significant impact for rights holders in Andean countries.

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Vilnius District Court: no likelihood of confusion between SATI-formative marks

A Lithuanian court has dismissed an action for the invalidation of the mark SATIMED for goods and services in Classes 3, 5 and 42, and the mark SATIVERA for goods in Class 3, based on the earlier marks SATIVEX.

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Blow for Prada as General Court allows registration of THE RICH PRADA

The EU General Court has allowed the registration of THE RICH PRADA by Bali-based hotel The Rich Prada International, despite fashion house Prada's "exceptional reputation" in its PRADA mark.

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UDRP panel finds that respondent had competing legitimate interests - but dissenting panellist disagrees

The majority of a three-member UDRP panel has denied the transfer of a domain name identically reproducing a complainant's mark as the respondent had competing legitimate interests.

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New law reforms Lao IP regime; opposition procedure introduced for the first time

The new Law on Intellectual Property, which was published on 25 May 2018, introduces an opposition procedure for the first time in Laos.

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General Court considers bad-faith claim where parties had previous business relationship

The EU General Court has considered a bad-faith cancellation action in which the parties had entered into certain business negotiations, but had not established clear contractual undertakings with regard to the mark at issue.

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CJEU decision on KENZO ESTATE leaves winery with sour grapes

The Court of Justice of the European Union has handed down its decision in the opposition proceedings between fashion house Kenzo and Mr Kenzo Tsujimoto, owner of US-based winery Kenzo Estate.

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New law on customs measures now in force - what rights holders need to know

The Law on Customs Measures for the Protection of Intellectual Property Rights has now entered into force in Kosovo, introducing important changes intended to align local customs procedures with Regulation 608/2013.

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Benelux trademark law has changed – what you need to know

The Benelux Convention on Intellectual Property has been amended, giving the Benelux Office for Intellectual Property new responsibilities and expanding the authority of the Benelux Court of Justice.

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Beijing High Court: KEEMUN certification mark invalid due to owner's lack of good faith

In an action for the invalidation of the KEEMUN certification mark, the Beijing High Court has overturned a first instance judgment in favour of the Keemun Black Tea Association, the owner of the mark.

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Success for Jack Daniel's as Court of Appeals bans parallel imports

In Jack Daniel’s v BENI, the Kosovo Court of Appeals has ruled that the import and sale of genuine goods bearing registered trademarks without the trademark owner’s authorisation constitutes trademark infringement.

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TTAB decision underscores difficulty of proving fraud before USPTO

In a recent decision, the US Trademark Trial and Appeal Board has dismissed an opposition even though the applicant did not have use in commerce at the time of filing the application and used a mocked-up specimen.

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KUNG FU PANDA decision: assessing the scope of protection afforded to merchandising rights

The decision of the Beijing High Court in DreamWorks Animation LLC v TRAB provides guidance as to the scope of protection that should be afforded to merchandising rights.

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Can BLACK FRIDAY owner prevent use of 'Real Black Friday'?

The cassation court in Russia has confirmed that the owner of BLACK FRIDAY for services in Class 35 had abused its rights by suing an association of online shops for using the words 'Real Black Friday'.

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California district court recognises plausible trademark rights over fictional Star Wars board game

In Lucasfilm Ltd LLC v Ren Ventures Ltd a California federal court has recognised that trademark rights could arise from the use of a mark to identify a fictional board game in a popular literary genre.

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Know your audience: the importance of the relevant public when determining distinctiveness

The EU General Court has considered whether the mark VSL#3 in Class 5 had become the common name in the trade for the products at issue, and whether the mark misled the public because of its use.

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Largest-ever amount of compensation awarded in trademark infringement dispute between publishing houses

In a dispute between two publishing houses over the use of a logo, the Moscow City Arbitration Court has awarded the largest-ever compensation in an IP case in Russia.

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Issue 73
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